Appelant- M/s. Britannia Industries Limited
Respondent- PepsiCo Inc. and the Deputy Registrar of Trade Marks
Forum– Intellectual Property Appellate Board (IPAB)
Facts
Britannia Industries Limited had filed an application for the trademark SNAX, which they had claimed to have been using from 1965. Britannia had already registered trademarks BRITANNIA SNAX for biscuits breads, buns etc in Class 30. The trademark application for the mark SNAX was published in the Trademarks Journal in 2005 and was opposed by PepsiCo on the grounds that the mark SNAX is snacks misspelt and since snacks was a common English word; it should not be registered as a trademark.
The Deputy Registrar heard both sides in the opposition and passed and order in favour of PepsiCo, disallowing the registration of the mark.
Britannia appealed against this decision before the IPAB
Britannia’s Contentions;
Britannia argued that they had been using the term BRITANNIA SNAX from 1965 which was registered as a trademark. They stated that SNAX was a coined term and inherently distinct. Furthermore on the basis of their continuous use for close to five decades, they argued that the mark SNAX had acquired secondary meaning and was distinct.
PepsiCo’s contentions;
PepsiCo argued that the mark SNAX was a variant of the common English word snacks and since it was descriptive of the goods, the order of the Deputy Registrar in the opposition was accurate and had to be upheld
They also argued that since the previous registrations of the mark BRITANNIA SNAX were registered, subject to the disclaimer that they could not claim exclusive rights to the word SNAX, the mark cannot be treated as a trademark.
Order;
The IPAB agreed with PepsiCo on most of their contentions and held that ‘The word which has a direct reference to the character or quality of the goods it may be difficult to establish that it has lost its primary significance and has acquired a distinctive character’
The Board further held that the appellants other registrations were not for the word SNAX alone but always with their house mark Britannia. They were all filed with the Britannia mark prominently displayed and the registration for the other marks had been granted with the disclaimer stating that there were no exclusive rights granted to the term SNAX.
The IPAB upheld the Deputy Registrar’s order that allowed the opposition in favour of PepsiCo.
Editorial Staff
Editorial Staff at Selvam and Selvam is a team of Lawyers, Interns and Staff with expertise in Intellectual Property Rights led by Raja Selvam.
The Politics of Indian Intellectual Property
For those of you who decided to read the article based on the title, expecting some hard hitting piece of English prose on India and US talks on IP…
Restoring Patent Applications: Indian Courts’ Stance on missing of deadlines to request examination or respond to examination reports
As patent attorneys, adhering to deadlines is pivotal for the success of a patent application. In India, two critical deadlines to bear in mind while…
Character Merchandising in India – Licenses & Fan Art (Part Two)
In my previous article on character merchandising, I mentioned that all of us have at some point been guilty of buying merchandise of our favorite…